Judge may rule that the term "iPhone" is too generic for one company to own

A day after Apple announced the
iPhone, Cisco Systems quickly filed a lawsuit
against Apple, claiming that the computer company infringed on its
trademark. True enough, Cisco's consumer arm Linksys had released a product
called the iPhone earlier than Apple, and the trademark name
"iPhone" had been owned by Cisco for several years already. Despite
all this, Apple decided to launch its mobile communications device under the
iPhone name anyway -- a move declared as extremely bold by many analysts.

According to Brian Banner, a seasoned attorney dealing with intellectual
property and trademarks at Rothwell Figg, the "iPhone" name may
actually be generic enough that a judge will rule it usable by both Apple and
Cisco. The ruling will be under condition however, that a company name be
attached to the term "iPhone," like "Apple iPhone" or
"Cisco iPhone." Banner mentioned that the term may also be deemed
generic enough to use by any company.

"They must have figured the reward would be greater than the risk. They
probably did a lot of homework before calling it the iPhone and figured that
the registration Cisco has is not a serious impediment," says Banner. But
this is definitely not what Cisco thinks. Cisco representatives indicated that
it will vigorously defend what it owns. Apple on the other hand disagrees with
Cisco. "We believe that Cisco's U.S. trademark is tenuous at best,"
said Apple representative Katie Cotton. "We are the first company to use
the iPhone name for a cell phone and we're confident we will prevail."

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The issue is not as simple as you suggest. First, unlike with a copyright, one does not own a "trademark." Instead, one owns the right to use a trademark. That right is contingent on the party abiding by certain rules. For instance, unlike with copyright, to keep a trademark you 1) have to actually use, or intend to use, the Trademark, 2) the right to use the Trademark cannot already belong to somebody else, and 3) the Trademark cannot be a generic term in realtion to the product you are selling (e.g. Apple, Inc., to sell Apples). With a copyright, you do not have to do anything, and still maintain the rights assocaited with copyright (until they expire at lease).

It is also important to understand that Trademarks are supposed to be primarly about protecting consumers by giving them s means to identify the source of goods.

Here Cisco did not create the Trademark "iPhone." Apple fans, and the media, coined the name in response to their desires that Apple create a phone (do a Google search). Since, Apple uses the name "i" 'in many of its products (for instance, the "iMac, iLife, iWorks, and iCEO), they called the wished for phone the "iPhone."

Infogear is the first company to trademark the name "iPhone." Interestingly enough, its founders used to work for Apple and were familar with Apple's naming convention. Nonetheless, Ciso bought Infogear, and thus the right to use "iPhone." The problem is Cisco then sat on the Trademark for years without releasing a product using that name. That is not allowed under Trademark law. You must use your Trademark, or you lose the right to use it. This is because as a policy matter we do not want people registering all the good names, hoarding them, and then forcing people to buy the Trademarks.

Furthermore, there are other companies that have used the name iPhone. Complicating the matter even more is that if a company registers a Trademark in another country (provided it is a signatory to the appropraite Treaty), it is possible that the company owns the Trademark on a world scale (at least in countries that signed the treaty).

Accordingly, this issue is not as straight forward as "well Cisco owns the Trademark." It is possible that Cisco lost the right to use the trademark and that Apple applied for the right to use the trademark in another country, thus securing the world rights. In fact, Cisco's Trademark is currently being challenged as being abaondoned in the Trademark Office.

Also, Apple arguably has a Trademark in all related products that use an "i" before the name of the product. Apple, afterall, started the whole "i" naming convention. For instance, McDonalds own a trademark is the "Mc" before a product name. It has stopped companies from naming their businesses things such as "McSleep." (a proposed name for a cheap hotel change).

My over all point is this: Apple has an arguement that Cisco lost its rights to use the name because 1) it abondoned the trademark, and 2) since that time other compnies, including Apple have applied to use the name. .

Final thought, Cisco naming its device the "iPhone" is what is confusing to consumers. Consumers are the ones that coined the name for an Apple product they wished for. It seems inapproprate, if not necessary illegal, that another company can come around and highjack the name for its own use. In my mind, Cisco is the bad guy.

"This is about the Internet. Everything on the Internet is encrypted. This is not a BlackBerry-only issue. If they can't deal with the Internet, they should shut it off." -- RIM co-CEO Michael Lazaridis